Writ courts may restore patent applications abandoned due to patent-agent default in exceptional cases.

Deakin University’s Indian national-phase patent application for “Firefighter Training Unit” received a First Examination Report (FER) dated 25 November 2020.

Its Indian patent agent, STRAT IP, advised that pandemic-related Supreme Court orders extended the deadline, but did not later notify the petitioner that the extension had ended or act on instructions to prepare a FER response.

The application was treated as deemed abandoned under Section 21(1).

After learning of the abandonment in November 2022, the petitioner changed agents and, on 3 September 2024, filed a Rule 137 petition with its FER response.

The petition remained undecided despite reminders, prompting the writ petition.

The petitioner sought restoration, condonation of delay, and acceptance of the response.

Whether the Court could restore an application deemed abandoned under Section 21(1), despite the mandatory time limits for responding to the FER

Whether the petitioner had established sufficient grounds for restoration and condonation, given its patent agent’s default and the subsequent delay in seeking relief

Section 21(1) of the Patents Act, read with Rules 24B(5) and 24B(6) of the Patents Rules, requires a response to the FER within six months, with a possible three-month extension; those limits are mandatory, and the Controller cannot extend them.

However, the Court relied on The European Union v. Union of India, Bry-Air Prokon Sagl v. Union of India, and NTT DoCoMo Inc. v. Assistant Controller of Patents and Designs for the principle that a writ court may, in exceptional cases, restore an application where the applicant did not intend to abandon it and the abandonment resulted from the patent agent’s default.

An applicant should not ordinarily suffer for its agent’s mistake, and abandonment cannot be presumed without evidence of an intention to give up the application; writ relief must nevertheless be exercised sparingly.

The correspondence showed that the petitioner’s overseas attorneys sought an extension, later supplied detailed response instructions, and sent reminders, while STRAT IP neither updated them on the end of the pandemic extensions nor acted on or acknowledged those instructions.

The respondent did not dispute the correspondence and confirmed that STRAT IP had failed to file the response.

Although the response and Rule 137 petition were filed well after the applicable deadline, the Court accepted that the petitioner continued to pursue the application, changed agents after learning of the abandonment, and had not intended to relinquish it.

Since the Controller lacked power to extend the deadline and the Rule 137 petition had remained pending despite reminders, remitting the matter for a decision would serve no purpose; restoration would permit examination on the merits without granting a patent or prejudicing any third party.

It restored Indian Patent Application No. 201747029902 to its pre-abandonment status, condoned the delay, and directed the respondent to take the FER response dated 2 September 2024 on record and update its records within four weeks.

The respondent was directed to examine the application under the Act and Rules, endeavour to complete examination within six months, and provide a hearing if an adverse order was contemplated.

The Court expressed no view on patentability and made no order as to costs.